WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JJGC Indústria e Comércio de Materiais Dentários S.A. v. Yun-Ki Kim

Case No. D2016-1562

1. The Parties

The Complainant is JJGC Indústria e Comércio de Materiais Dentários S.A. of Curitiba, Brazil, represented by Taylor Wessing, Germany.

The Respondent is Yun-Ki Kim of Bucheon, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name, <neodent.net>, is registered with Dotname Korea Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2016. On August 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2016 and August 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

On August 25, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On August 30, 2016, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any comments.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Korean, and the proceedings commenced on August 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2016. The due date for Response was extended to September 21, 2016, due to a transmission delay. The Response was filed with the Center on September 21, 2016.

The Center appointed William R. Towns, David Perkins and Moonchul Chang as panelists in this matter on October 10, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, founded in Brazil in 1993, manufactures and sells dental implants. The Complainant has used the trademark NEODENT in connection with its dental implants since 1993. The Complainant owns a Brazilian trademark for NEODENT registered on September 16, 1997, maturing from an application filed on April 17, 1995. The Complainant also has registered its NEODENT mark in more than thirty jurisdictions around the world. This includes a Republic of Korea trademark registration for NEODENT issued on August 6, 2015, applied for on July 1, 2014. The Complainant registered the domain name <neodent.com.br> in July 1999, for use with the Complainant’s website.

The Respondent is a dentist in Seoul, Republic of Korea. His practice includes dental implants. The Respondent registered the disputed domain name <neodent.net> on November 25, 2003. The Respondent previously registered the domain name <neodent.com> on July 12, 2002. The Complainant in 2013 brought a UDRP case against the Respondent, concerning the <neodent.com> domain name. See JJGC Indústria e Comércio de Materiais Dentários S.A. v. Yun-Ki Kim, WIPO Case No. D2013-1838 (“JJGC I”). A three-member panel issued a unanimous decision in that case on December 20, 2013, denying the complaint and finding the Complainant to have engaged in reverse domain name hijacking (“RDNH”).

In December 2015, the Complainant approached the Respondent, with the goal of purchasing the disputed domain name along with the domain name <neodent.com>. In the course of communications between the Parties, the Respondent took the position that the domain names enjoyed “a value of more than a 7-year salary of a leading Major League player in the US”. The Respondent also redirected the disputed domain name to a Nobel Biocare website and the <neodent.com> domain name to a Neobiotech website. Nobel Biocare and Neobiotech manufacture dental implants and are competitors of the Complainant. In February 2016, the Complainant offered the Respondent the sum of USD 30,000 for both domain names. The Respondent did not accept the Complainant’s offer.

The Respondent represents that the disputed domain name has been used since its registration in 2003 to promote the Respondent’s Neo Dental Clinic website. The Respondent has submitted as an annex to the Response an undated image said to reflect the Neo Dental Clinic website (“Respondent’s website”). The Respondent otherwise has provided no evidence of the historical use of disputed domain name. The image of the Respondent’s website as submitted features advertisements for three dental implant manufacturers: OSSTEM, Neobiotech, and Implantium. The JJGC I panel noted in its 2013 decision the Respondent had employed robots.txt to prevent searches regarding the use of the <neodent.com> domain name.

5. Parties’ Contentions

A. Complainant

The Complaint submits that the disputed domain name <neodent.net> is identical to the Complainant’s NEODENT mark, when disregarding the generic Top-Level Domain (“gTLD”). The Complainant explains it was founded over 20 years ago and is the fourth-largest dental implant company worldwide, with over one million NEODENT implants per year chosen by dentists worldwide. According to the Complainant, its NEODENT mark is strongly distinctive, as evidenced by the registration of the mark in numerous and diverse jurisdictions around the world. The Complainant asserts that the NEODENT mark is “fanciful”, that the English word “dent” does not mean dental, and that NEODENT has no meaning in the Korean language. The Complainant submits that its Korean trademark registration in 2015 confirms that NEODENT is not descriptive in relation to the claimed dental services.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is not an affiliate or distributor of the Complainant and has not been authorized or licensed to use the Complainant’s NEODENT mark. The Complainant maintains that the Respondent has no right or legitimate interest to use the disputed domain name <neodent.net> in connection with the Neo Dental Clinic, asserting that “dent” is not an abbreviation or shortcut for “dental”. The Complainant further submits that the Respondent’s use of the disputed domain name to redirect Internet users to the homepage of Nobel Biocare, one of the Complainant’s major competitors, and without Nobel Biocare’s permission, is not a legitimate use of the disputed domain name.

Concerning the Respondent’s assertion that he is leading a group of dentists in a venture called the Neodent Work Group, the Complainant submits there is no evidence that such a group even exists, and no evidence of the Respondent’s use of the disputed domain name with such a venture. The Complainant describes this as a self-serving assertion made by the Respondent to bolster his claim that “dent” is an abbreviation for “dental”. The Complainant further submits that the Respondent has made no legitimate use of the disputed domain name during the thirteen years since it was first registered.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the mere fact that the Respondent registered a domain name appropriating the Complainant’s NEODENT mark reflects that the Respondent is acting in bad faith. The Complainant further submits that the Respondent, with a dental practice in Seoul that includes dental implants, would have been aware of the Complainant and its Neodent implants when registering the disputed domain name, particularly given that the Complainant already had been providing dental implants for ten years and was a well-established name in the dental market.

The Complainant submits that the Respondent is seeking a “lucrative ransom” for domain names misappropriating the Complainant’s NEODENT mark. The Complainant contends that the Respondent’s bad faith is evidenced by the redirection of the disputed domain name to the homepage of Nobel Biocare, together with the Respondent’s refusal to discontinue this use despite repeated requests by the Complainant. The Complainant calls attention to the Respondent’s valuation of the disputed domain name based on salaries commanded by highly compensated athletes (“major league players”), and to the Respondent’s professed need for the disputed domain name based on the “Neodent Work Group”, which the Complainant maintains is pretextual. The Complainant further asserts that the Respondent’s employment of robots.txt is also evidence of bad faith.

The Complainant argues that, even assuming the Respondent had no knowledge of the Complainant and no bad faith intent when registering the disputed domain name, a finding of bad faith registration and use may still be made based on the Respondent’s subsequent bad faith use of the disputed domain name. The Complainant relies upon the UDRP decisions in Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, and Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001. The Complainant argues that the Respondent’s intentional redirection of the disputed domain name to the home page of one of the Complainant’s major competitors, Nobel Biocare, is the “epitome of bad faith”. The Complainant also notes that is has been involved in a patent dispute with Nobel Biocare, which is invariably returned as the first hit in any relevant search combining “Neodent” and “Nobel Biocare”.

B. Respondent

The Respondent submits he has operated a dental practice under the name “Neo Dental Clinic” in the Republic of Korea since July 2002. The Respondent maintains that he was not aware of the Complainant and its NEODENT mark when registering the disputed domain name in 2003. According to the Respondent, the Complainant and its NEODENT mark are not well known in the Republic of Korea, and he did not become aware of the Complainant’s brand at any dental seminars or conferences he attended. The Respondent asserts that it was not until the filing of the complaint in JJGC I that he first learned of the Complainant’s mark.

According to the Respondent, the disputed domain name consists of the words “neo” (“new”) and “dent” (“dental”). The Respondent asserts that “neodent” is not distinctive and could be used by other dental clinics. He maintains that it is his logo that is distinctive in relation to his dental clinic:

Regarding the Complainant’s Korean trademark registration for NEODENT obtained in 2015, the Respondent argues that the scope of the covered goods and services is limited to a dental cam program, dental 3D measuring program, and dental program for transferring 2D to 3D images, and does not encompass dental implants. The Respondent asserts that his business activities are sufficiently different from the covered goods and services claimed by the Complainant in its Korean NEODENT trademark registration that no confusion should result from the Respondent’s use of the disputed domain name.

The Respondent represents he has used the disputed domain name solely to promote his own clinic, and not to sell products competing with those of the Complainant. According to the Respondent, the disputed domain name resolved to a Korean-language website for the Neo Dental Clinic until the recent termination of his domain name hosting service. The Respondent explains that he is currently utilizing a free service to forward the disputed domain name and the domain name at issue in JJGC I to the Korean portal sites of Nobel Biocare and Neobiotech. The Respondent submits this helps his patients to understand his dental services because the Respondent uses the products of these dental implant manufacturers.

According to the Respondent, after the decision in JJGC I the Complainant sent a letter of apology to the Respondent and sought to induce the Respondent to sell the disputed domain name. The Respondent maintains that he expressly refused to sell disputed domain name at all times when contacted by the Complainant. The Respondent notes that the UDRP panel in JJGC I, in addition to denying the complaint, also made a finding of RDNH by the Complainant.

6. Preliminary Matters

A. Language of the Proceeding

Pursuant to the paragraph 11 of the Rules, unless otherwise agreed by the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the administrative panel, once appointed, to determine otherwise. It is undisputed in this case that the language of the registration agreement as provided for under the Rules is Korean.

The Complainant nonetheless has urged the Panel to apply English as the language of the proceeding, asserting that the Respondent has sufficient ability to communicate in English language. The Complainant relies on email communications from the Respondent included in the Annexes to the Complaint, but omits to mention the Respondent’s communications were written in Korean to prevent errors and then translated into English. In any event, in the circumstances and to avoid further delay, the Panel will follow the approach taken in JJGC I, and agrees with the Center’s preliminary determination to proceed both in English and Korean, accepting the Complaint as filed in English and the Response as filed in Korean. As in JJGC I, the Panel renders its Decision in English, as the language in which all members are fluent.

B. Supplemental Submissions

The Complainant on October 20, 2016, almost a month after the filing of the Response, forwarded to the Center an unsolicited and lengthy supplemental submission. The Respondent then forwarded to the Center on October 28, 2016, an unsolicited submission of his own. No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the Panel. Paragraph 12 of the Rules provides that a panel may request, in its sole discretion, further statements or documents from either of the parties. However, the Rules and relevant UDRP panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield, WIPO Case No. D2008-0754. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2.

UDRP panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission (see Top Driver, Inc., v. Benefits Benefits, WIPO Case No. D2002-0972); to bring new and highly relevant legal authority not previously available to the attention of the panel (see Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105); or to rebut arguments of the opposing party that could not reasonably have been anticipated (see Randan Corp. v. Rapazzini Winery, WIPO Case No. D2003-0353). Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions, (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

In this case, the Panel finds unpersuasive the Complainant’s assertion that the Response includes “unforeseeable” arguments the Complainant could not reasonably have anticipated.¹ The Complainant’s unsolicited submission does little more than reargue the same issues addressed in the Complaint. The Respondent’s unsolicited submission likewise reargues the same issues addressed in the Response. The Panel finds no exceptional circumstances that would warrant either of the Parties’ supplemental submissions. As such, the Parties’ supplemental submissions have not been considered by the Panel in reaching its decision.

7. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774). Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting” (see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; and Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170).

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

A. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s NEODENT mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.² The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

Although the gTLD may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs are more typically disregarded when evaluating the similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. A majority of the Panel finds that the Complainant has made a prima facie showing. The Respondent has not been authorized or licensed to use the Complainant’s NEODENT mark. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is identical to the Complainant’s mark, and has caused the disputed domain name to be directed to the website of at least one of the Complainant major competitors.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As discussed above, the Respondent represents that he has continuously used the disputed domain name to promote his dental practice since 2003, and has submitted an image of the website to which, he maintains, the disputed domain name resolved until the recent termination of his domain name hosting service. A majority of the Panel concludes it would be reasonable to expect that the Respondent, a dentist whose practice involves dental implants, would have acquired specialized knowledge concerning dental implant manufacturers. Indeed, the Respondent’s website has promoted three dental implant manufacturers, OSSTEM, Neobiotech, and Implantium, presumably since 2003. And more recently the Respondent explained that he directed the disputed domain name to Nobel Biocare’s website because he uses Nobel Biocare’s dental implant products.

When the Respondent, a dentist, registered the disputed domain name in 2003, the Complainant had been selling dental implants under the NEODENT mark for nearly a decade. Given the Respondent’s general knowledge of dental implant manufacturers and the importance of such products to his practice, a majority of the Panel finds it unlikely that the Respondent independently and without knowledge of the Complainant coined the term “neodent” for use as a domain name. Based on the record in this case, a majority of the Panel finds it more likely than not that the Respondent was aware of the Complainant and had the Complainant’s NEODENT mark in mind when registering the disputed domain name.

There is a noticeable paucity of evidence provided by the Respondent reflecting the historic use of the disputed domain name. In view of the finding above, a majority of the Panel is not persuaded that the Respondent has met his burden to bring forth some evidence of the Respondent’s use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In any event, a majority of the Panel finds that the Respondent’s use of a domain name identical to the Complainant’s mark to attract Internet traffic to his website does not constitute a bona fide offering of goods or services, particularly in light of evidence submitted by the Respondent showing that his website has been used to promote dental implant products of the Complainant’s competitors – namely, OSSTEM, Neobiotech, and Implantium.

The Respondent’s more recent use of the disputed domain name to direct Internet users to the website of Nobel Biocare, also a direct competitor of the Complainant, does not qualify as use of the disputed domain name in connection with a bona fide offering of goods or services in the opinion of a majority of the Panel. Nor has the Respondent brought forth any evidence of use or demonstrable preparations to use the disputed domain name in connection with the project identified as the Neodent Work Group.

While the record reflects that the Respondent’s dental practice has been known (with its logo) as the Neo Dental Clinic, a majority of the Panel finds that the Respondent has come forward with no evidence that he has been commonly known by the disputed domain name. The Complainant’s registration of a Korean trademark for NEODENT in 2015 would seem to reinforce this conclusion in the view of a majority of the Panel.

There is nothing in the record of this case to support a claim by the Respondent to be making a legitimate noncommercial or fair use of the disputed domain name.

Accordingly, a majority of the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, a majority of the Panel finds that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. A respondent’s intent in adopting the domain name remains a key factor in the determination of bad faith under the Policy. It has been conventional wisdom in cases decided under the Policy that there be some evidence, whether direct or circumstantial, indicating that the respondent had the complainant's mark in mind. See The Skin Store, Inc. v eSkinStore.com, WIPO Case No. D2004-0661.

For the reasons previously discussed, a majority of the Panel finds that the record supports an inference that the Respondent was aware of the Complainant and had the Complainant’s NEODENT mark in mind when registering the disputed domain name. In the circumstances of this case, a majority of the Panel considers that the Respondent’s employment of robots.txt, preventing any review of the history of the use of the disputed domain name, is further indication of the Respondent’s bad faith intent. See The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. A majority of the Panel further concludes that the Respondent’s redirection of the disputed domain name to the website of one of the Complainant’s major competitors, in what may be little more than a calculated attempt to extract from the Complainant an exorbitant offer for the disputed domain name, clearly evinces the use of the disputed domain name in bad faith.

Based on the totality of the facts and circumstances in this case, a majority of the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith. While noting that in JJGC I the panel found that the domain name <neodent.com> was not registered in bad faith, in this case the evidence provided by the Complainant sheds light on the Respondent's intent when registering the disputed domain name <neodent.net>. Based on the foregoing, and having carefully considered the evidence on record, including the Complainant's evidence of use of its NEODENT trademark since the year 1997, the Complainant’s registration of a Korean trademark for NEODENT (to which the Respondent did not file an opposition), and the current use of the disputed domain name to redirect Internet users to websites of the Complainant’s major competitors, the majority of the Panel finds it more likely than not that the aim of the registration by the Respondent was to target the Complainant.

Accordingly, a majority of the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <neodent.net> be transferred to the Complainant.

William R. Towns
Presiding Panelist

David Perkins
Panelist

Moonchul Chang
Panelist (Dissenting)
Date: November 18, 2016

DISSENTING OPINION

There was a minority opinion of the Panel about the Respondent’s bad faith registration. While the Respondent asserts that he was not aware of the Complainant and its NEODENT marks because the Complainant’s goods and trademarks were not well known even to the dentists in the Republic of Korea at the time of Respondent’s registration of the disputed domain name in 2003, the Complainant could not provide sufficient evidence showing that it had any market presence or advertisement in the Republic of Korea. In addition, the letter of apology by a CEO of NEODENT (further to the JJGC I decision) sent the Respondent may connote that the Complainant acknowledged the Respondent’s lack of bad faith in registering the domain name <neodent.com> and the disputed domain name <neodent.net>. Further, the Respondent expressly refused to sell the disputed domain name whenever the Complainant contacted the Respondent in numerous ways. As to the domain name <neodent.com>, the panel in JJGC I previously made a finding of RDNH by the Complainant. Having considered the above-mentioned issues, this Panelist is of the opinion that the Complainant has not satisfied the UDRP requirement of bad faith registration of the Respondent.

Moonchul Chang
Panelist (Dissenting)
Date: November 18, 2016

¹ Complainant’s legal counsel noted in an earlier email to the Center that “the previous UDRP proceeding [ WIPO Case No. D2013-1838] dealt with a virtually identical domain, <neodent.com>, where the parties were identical and the underlying – disputed – legal issues were almost identical.”

² See WIPO Overview 2.0, paragraph 1.2.